TRADEMARKS: A PRIMER

Trademarks are important assets to businesses. Every day most people see at least 1,500 trademarks from the moment they wake up in the morning until they climb back in bed at night. Trademarks are everywhere: on clothes, food, toys, office supplies, movies, books, cars, and more!

Trademarks protect words, names, symbols, sounds, or colors that distinguish goods and services. And, unlike patents, trademarks can be renewed forever as long as they are being used in business.

Familiar trademarks include:

® the shape of a Coca-Cola bottle
® the pink of Owens-Corning insulation
® the roar of the MGM lion and the sound of a Harley Davidson engine

With the widespread use of the Internet, small businesses are easily able to transact business nationwide. This makes trademark protection an important issue sooner rather than later. Knowing the fundamental trademark mistakes to avoid at the beginning of your business can mean big savings.

It is fun to think about names for your business, but there are issues you should know that affect the protection of your investment in the name you choose. The most common mistake small businesses make is choosing a name that is either a personal name or descriptive of the product or service they are selling.

The most valuable trademarks are words that have little or nothing to do with the product or service. Good choices for words are those that are fanciful, and even made-up words. These trademarks are most likely to be remembered by consumers.

Good examples of famous fanciful marks are CASIO for calculators; Coca-Cola for soda drinks; Nike, the swoosh logo, and the phrase “Just do it!” for athletic clothing; and Oshkosh B’Gosh for children’s clothing. Think about it. It’s no coincidence that famous trademarks usually have little or no association with the products and/or services they represent, and are very unique sounding!

Take the trademark test to see if your name is eligible for a federal registration:

Four-Question Trademark Test

1. Is your mark a personal first or last name? – YES/NO
   
2. Is your mark descriptive of your product or service and/or geographically descriptive? – YES/NO
   
3. Is your mark currently registered with the government or being used in the marketplace? – YES/NO
   
4. Is your mark confusingly similar to a mark currently used in commerce for the same or similar goods or services as yours? – YES/NO
   

Your answer to all four questions must be “NO” for your trademark to have the best chance of qualifying for a U.S. trademark registration. Answering the first two questions is straightforward. Is your mark a personal first or last name? There are extra legal issues with choosing a trademark that is a personal first and/or last name.

Is your mark very obviously merely a description of your product or service? An example of a mark that fails Question 2 is “American Tax Services” for a tax preparation business. An application for a U.S. trademark registration for this business name would be rejected because the name describes the geography of the mark and also describes the services the mark is being used for.

Is your mark currently registered with the government or being used in the marketplace? With the Internet it is easy to answer question 3. By doing a keyword search on the Internet you can determine if and how your trademark is currently being used in business. If you find your trademark being used in commerce for the same goods and/or services, you should not use this mark.

You can search U.S. trademark registrations on the government website at www.uspto.gov. USPTO stands for the U.S. Patent & Trademark Office.

Under U.S. trademark law, you must apply the “confusingly similar” test to determine whether your name is confusingly similar to someone else’s trademark. This test is commonly known as sight-sound-meaning test, or the trilogy test.

Sight Test:
Does your mark LOOK LIKE similar marks, which are registered, pending or currently used in commerce with related goods/services?

Sound Test:
Does your mark SOUND LIKE similar marks, which are registered, pending, or currently being used in commerce with related goods/services?

Meaning Test*:
Does your mark MEAN SOMETHING similar to marks, which are registered, pending, or currently being used in commerce with related goods/services?
*If your mark is in a foreign language, you must evaluate the MEANING TEST as it applies to the English translation.

You can now see that if your mark is Knike for athletic wear that adds a “K” to “nike,” that it fails the trilogy test on all three questions; it looks similar, it sounds the same, and it is used for the same goods. REMEMBER, WORDS DOMINATE! Things like letter styling, coloring, etc. are not very significant in applying the sight-sound-meaning test.